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les Nouvelles - March 2017


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  • les Nouvelles - March 2017 - Full Issue
    PDF, 3.01 MB
  • China Judicial Reforms Are Creating Opportunities For Technology Transfer And Licensing
    By Judge LUO Xia
    With the development of science and technology great distances in the past have been made unbelievably short. This is the achievement of the progress of human civilization. The historical experiences of both China and other countries have once again proved that culture needs exchanging, the legal theory and practice need exchanging also. Through exchange we can learn from each other and come to know each other better. Through exchange we can give full play to human wisdom and enjoy the common fruits of civilization.
    PDF, 102.50 KB
  • Effective Royalty Rates In Biopharma Alliances: What They Are & Why Use Them In Negotiations
    By Mark G. Edwards
    As a licensing professional in the biopharma industry for the past three decades, I’d argue that there is no component of a biopharma contract that is more heavily relied upon, and less rigorously analyzed, than the royalty rate.
    PDF, 207.24 KB
  • Unraveling The Conundrums Of Running Royalties In Cross-Border Patent License Agreements
    By Mizuki Hashiguchi
    Adjacent to the glorious and delicate stained glass of Sainte-Chapelle, stands the magnificent “Palace of Justice,” currently housing the Court of Appeal of Paris. In Genentech v. Hoechst, the court encountered an enigma involving patent royalties and European competition law. A license agreement licensed three patents. One patent was subsequently revoked. The other two patents were later found not to be infringed by the licensee. Yet, the license agreement imposed an obligation on the licensee to pay running royalties throughout the contractual term. Is the imposition of this obligation permitted under Article 101 of the Treaty on the Functioning of the European Union?
    PDF, 185.63 KB
  • To What Extent Are University IP Policies Legally Binding? Part 3: Visiting Scientists
    By Philip Mendes
    Part 3 concludes this series by considering the question of the extent to which a university IP policy is binding upon a visiting scientist, that is, a scientist employed by one university (the employer university) who visits and undertakes research at another university (the host university).
    PDF, 114.01 KB
  • Royalties For Unpatented Technology
    By Richard Binns and Nicola Walles
    The Court of Justice has ruled that a licensee could be obliged to pay past royalties under a patent licence agreement even after a patent has expired or been deemed invalid, provided that the licensee has the ability to terminate the licence agreement for convenience.
    PDF, 106.67 KB
  • Beyond Hybrid Licenses— Strategies for Post Patent Expiration Payments in the United States
    By Patrick Gattari, Steven Ferguson, David Crichton and Bryan Helwig
    The United States patent system grants patent holders exclusive rights in their invention for 20 years from the application filing date.2 During the period of exclusivity patent holders often elect to offer licenses in exchange for royalty payments. At the end of the patent term the invention is dedicated to the public and post-patent expiration royalty payments are “unlawful per se” under the 1964 United States Supreme Court holding in Brulotte v. Thys. Co.
    PDF, 145.92 KB
  • Shifts In Big Oil Patent Landscape: Capturing Value From Intellectual Property For National Transformation
    By Paul Germeraad, Rashid Khan and Deepa Ravindranath
    This paper highlights the emerging trends in energy sources and in particular the effect of these trends upon the traditional oil and gas industry and the oil rich nations of the world. Particular attention is paid to emerging countries which have vast oil and gas assets but who have now expressed the intent to transform themselves from their traditional oil and gas commodity based economies into knowledge-based societies. As part of this transformative process, companies and nations around the world are taking a closer look at the monetary value and economic use of IP.
    PDF, 327.33 KB
  • What Is An Intellectual Property Strategy For Oil And Gas Industry?
    By M. Rashid Khan
    With the development of science and technology great distances in the past have been made unbelievably short. This is the achievement of the progress of human civilization. The historical experiences of both China and other countries have once again proved that culture needs exchanging, the legal theory and practice need exchanging also. Through exchange we can learn from each other and come to know each other better. Through exchange we can give full play to human wisdom and enjoy the common fruits of civilization.
    PDF, 100.93 KB
  • Standard Development: Opportunities For SMEs
    By Matteo Sabattini and Alessandra Mosca
    Standards allow companies of all sizes to actively contribute to a collaborative and yet challenging ecosystem by making new technologies widely accessible through interoperability and providing several benefits to all users. Small and Medium Enterprises( SMEs), however, require a tailored standardization strategy that can leverage their key strengths, exploit their assets and access new markets and opportunities.
    PDF, 74.30 KB
  • Are We There Yet? Recent Obstacles On The Rocky Road To The Unitary Patent
    By Patricia Cappuyns and Jozefien Vanherpe
    Following the Brexit vote on 23 June 2016, chances of the UK ratifying the Agreement on a Unified Patent Court (UPCA) appeared slim. Since such ratification is required for the entry into force of the Unitary Patent system, including the Unified Patent Court (UPC), this meant that the future of the Unitary Patent was hanging in the balance. At the end of November 2016, the UK government relieved anxious proponents of the Unitary Patent system by confirming that it would be proceeding with preparations to ratify the UPCA. In December 2016, Germany followed suit and also resumed its preparations for UPCA ratification. While this seemed to bring us closer to the Unitary Patent, any unbridled optimism was soon thwarted when UK Prime Minister Theresa May announced in January 2017 that her government’s Brexit will be a “hard” one, involving a clear departure by the UK from the EU single market as well as the UK’s withdrawal from the jurisdiction of the Court of Justice of the European Union (CJEU). This could jeopardise the possibility for the UK to remain part of the Unitary Patent system in a post-Brexit world.
    PDF, 108.88 KB
  • Recent U.S. Court Decisions And Developments Affecting Licensing
    By John Paul and D. Brian Kacedon
    Claims of Patent Infringement 1. Pleading patent infringement based on continue production of licensed products. 2. Divided patent infringement based on customer software use.Standing to Sue 3. Covenants not to sue and standing to challenge patent validity. 4. Retroactive patent license insufficient to cure defect in standing to sue for patent.Remedies 5. Reasonably royalty for patent infringement based on incremental value of patented features. 6. Willful patent infringement claim on day of patent issuance.7. Preliminary injunctions against patent infringement -harm to licensees insufficient to show required irreparable harm.8. Limitations on total profit damages for design patent infringement.Interpretation 9. Anti-assignment provisions-distinguishing assignment of agreement versus licensed IP. 10. License agreement commercialization provisions as later obstacle to license defense.Inter Partes Review 11. Patent assignor as inter partes review petitioner.12. Stay of patent infringement litigation in view of inter partes review instituted for similar patent claims.
    PDF, 203.67 KB